The Supreme Court has issued its ruling in Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49.
In 2018, Dr Thaler, the Appellant, filed two patent applications for inventions under the Patents Act 1977.
The request for grant forms which accompanied them stated that Dr Thaler was not an inventor. Dr Thaler was notified that he would need to file a statement of inventorship and an indication of the derivation of his right to the grant of the patents within 16 months of the filing date of the applications under section 13(2) of the 1977 Act and rule 10(3) of the Patent Rules 2007 (“the Rules”). Dr Thaler responded by saying that the inventor was a machine called DABUS, acting autonomously and powered by AI, and that he acquired the right to the grant of the patents because he owned DABUS.
Dr Thaler requested a hearing at which he argued that the information he had provided met the requirements of the 1977 Act and the Rules.
On 4 December 2019, the Hearing Officer for the Comptroller, the Respondent, issued a decision that DABUS could not be regarded as an inventor under the 1977 Act, and further, that Dr Thaler was not entitled to apply for the patents simply because he owned DABUS. The Comptroller also indicated that the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3) of the Rules.
Dr Thaler’s appeal against the Comptroller’s decision and order was dismissed in the Patents Court and by a majority in the Court of Appeal. Dr Thaler appealed to the Supreme Court, which has now issued its ruling.
The Supreme Court’s decision
The Supreme Court has unanimously dismissed the appeal. It has held that the Comptroller was right to find that the applications would be taken to be withdrawn at the expiry of the sixteen-month period in rule 10(3) of the Rules.
The Court emphasised that the appeal was not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Rather, it deals with the interpretation and application of the relevant provisions of the 1977 Act.
Dr Thaler has made clear that he is not an inventor; that the inventions were made by DABUS and that his right to the grant of patents for those inventions arises from his ownership of DABUS. Therefore, the outcome of the appeal turned on three issues.
Issue one: the scope and meaning of the term “inventor” in the 1997 Act.
The first issue concerned if the term “inventor” in the 1977 Act extends to a machine such as DABUS under sections 7 and 13 of the 1977 Act. The Supreme Court held that an inventor under the 1977 Act must be a natural person. Sections 7(2) and 7(3) provide an exhaustive code for deciding who is entitled to the grant of a patent. The inventor must be a natural person and any other person to whom the patent may be granted must claim through the inventor. In addition, section 13 contains no suggestion that an inventor may be a machine.
In all the circumstances, the Comptroller was right to decide that DABUS is not and was not the inventor of any new product or process described in the applications. Further, it is not and never was an “inventor” under section 7 or section 13 of the 1977 Act.
Issue 2: Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?
Dr Thaler argued that he was nevertheless entitled to file applications for and obtain the grant of patents for the invention due to his ownership of DABUS.
The court rejected this argument. Section 7 of the 1977 Act confers the right to apply for and obtain a patent and it provides a complete code for that purpose. The section requires there to be an inventor and an inventor must be a person. DABUS is not a person. Secondly, the applicant, if not the inventor, must be a person falling within section 7(2)(b) or section 7(2)(c).
Dr Thaler does not satisfy any part of this carefully structured code. He submitted that this analysis is incomplete because the 1977 Act recognises that there is property in an invention at the time it is made. He also contended that as the owner of DABUS and by analogy with or upon application of the doctrine of accession, he derived the right to apply for and be granted patents for the inventions described in the applications.
The Court also rejected these arguments. First, they assumed, wrongly, that DABUS can be and is an inventor. Secondly, they mischaracterised an invention as being or amounting to tangible property such that title to it can pass, as a matter of law, to the owner of the machine which, on this assumption, generated it. There was no basis for applying the doctrine of accession in these circumstances. The Court of Appeal was right to hold that the doctrine of accession does not, as a matter of law, operate to confer on Dr Thaler the property in or the right to apply for and obtain a patent for any technical development made by DABUS acting autonomously.
Issue 3: was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
The Hearing Officer for the Comptroller was entitled to hold that Dr Thaler did not satisfy either of the requirements in section 13(2) of the 1977 Act: he failed to identify any person(s) whom he believed to be the inventor or inventors of the inventions described in the applications and his ownership of DABUS did not provide a proper basis for accepting his claim to be entitled to the grant of the patents for which he had applied.
The Comptroller was right to find the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3) of the Rules. The first instance judge and the Court of Appeal made no error in affirming that decision and in finding that the applications are now deemed to have been withdrawn.
The UKIPO has investigated this issue and said “There is no evidence that UK patent law is currently inappropriate to protect inventions made using AI. We are also sensitive to concerns that unilateral change now, risks being counterproductive. So, we will advance international discussion so that inventions devised by AI are appropriately protected in the future.” It may now take another look at the issue, although it was at pains to say that “we are concerned that the recent publicity about naming an AI system as an inventor risks the incorrect conclusion that UK patent law does not protect AI-assisted inventions. A patent may in fact be granted for an AI-assisted invention provided the application satisfies the legal requirements set out in the UK Patents Act 1977.”
